Most people and businesses will have heard of intellectual property rights which need to be registered, such as patents and registered trade marks, but what about those rights which arise automatically in the UK?
Systems vary from country to country, but in the UK, IP rights often come into being without the need to register them. Below are some of the more common ones that arise, and which may deliver value to a business.
Copyright rewards those who create an original work and expend effort in doing so. It protects the form of expression of ideas and can arise in original literary, dramatic, musical and artistic works. It also arises in databases and recordings (both visual and audio).
Examples of such works in a business context might be marketing materials, pages on a website, a video tutorial or podcast and software code.
If a work attracts copyright protection, then it allows the owner to prevent copying and it will last for a set period, which is usually the life of the author plus 70 years from the end of the calendar year of his/her death.
There are, however, some permitted acts which allow a party to use the work without infringing the copyright. Such permitted acts include:
- Research and private study,
- Criticism or review,
- Reporting current events,
- Quotation, and
- Parody, caricature, or pastiche.
As mentioned, a database might attract copyright protection.
There is also a separate right, known as the “database right”, that can afford additional protection; and as with copyright, it is arises automatically without registration.
To qualify for such protection, it needs to be a collection of independent works, data or other materials which:
a) are arranged in a systematic or methodical way, and
b) are individually accessible by electronic or other means.
Database rights cover databases such as mailing lists and telephone directories. However, it is important to note that database rights protect the collection of data and not the component parts (i.e. the software used to create the database). Instead, copyright can come into play and protect this element.
Once a database right comes into existence, the right lasts for either 15 years from the end of the calendar year in which the database was first created, or (if it was published in that period) 15 years from the end of the calendar year in which the database was first made available to the public.
A good example of a database that might attract protection is a client list arranged in a particular way (and it is lists such as this that are often vulnerable to being taken by third parties – such as exiting employees).
Unregistered UK design rights also arise automatically and generally vest in aspects of a 3D shape or configuration design. However, a design right does not subsist in a method, principle of construction, or surface decoration. It also does not subsist if it is commonplace.
An unregistered design allows the owner to reproduce the design for commercial purposes and it gives he owner the right to prevent unauthorised copying of the design in the UK. The right lasts for 15 years from the end of the calendar year in which the design was first recorded, or 10 years from the end of the calendar year that the design was first marketed (if it was marketed in the first 5 years of having been recorded).
During the last 5 years of the term of protection, a licence must be granted to any third party which requests to use the design. The benefit for the proprietor if such a request is made is that a licence can generate royalties. If the terms of such a licence cannot be agreed, the UK Intellectual Property Office can settle the terms of the licence.
Examples of designs used in day-to-day life which attract unregistered design protection include designs in the textile and fashion industries and industrial items(e.g. the design of a chair, table or a teapot).
It is essential to ensure that the design is recorded in some way to prove your right in the event there is a dispute further down the line. This can be done, for example, by asking a solicitor to sign and date a copy of the design.
Unregistered Trade Marks/ Passing Off
The tort of passing off has been developed by the courts over many years with the aim of protecting those who have not registered their trade marks from infringers who could otherwise escape liability. The right to claim passing off generally arises when:
1. goodwill or reputation attaches to the claimant’s goods or services,
2. there is a misrepresentation by the defendant to the public, which leads to the public believing the defendant’s goods or services are those of the rights holder; and
3. damage is caused or is likely to be caused to the claimant as a result of the misrepresentation.
Goodwill can be built and established through extensive use of the goods or services (including but not limited to online and customer reviews, years of service, and revenue).
Provided it can be established that the necessary goodwill exists, then the mark owner may be able to prevent a competitor from using a similar or identical mark by bringing a claim in passing off. The advantage of registering the mark though, is that it is not necessary to prove the existence of this goodwill.
Unlike copyright and unregistered designs, there is no limit on the period of protection for unregistered trademarks; though claims for damages can only “go back” 6 years.
Although not a conventional intellectual property right, information which is sensitive to a business can be protected. To bring an action for breach of confidential information, one must satisfy the following test:
1) The information must be confidential in nature;
2) It must have been disseminated in circumstances in which an obligation of confidence arises; and
3) It was used without authorisation to the detriment of the person/business who provided the information.
Relief and Remedies
The relief and remedies available to a rights holder may, depending on the right infringed, include the following:
· Damages or an account of profits,
· interim injunction (to restrain the defendant’s actions until a full trial can be held),
· search and seizure orders, and
· delivery up or destruction of the infringing goods.
Most businesses will be creating protected IP on a daily basis; without the need to register anything.
It is important to understand what rights can and should be registered and which will arise automatically.
For businesses trading abroad, it should be borne in mind that IP laws can vary from country to country (in the United States for example, copyright can be registered).
If you would like to discuss your intellectual property rights and any other legal issues your business might be facing, then please contact George Duncan at firstname.lastname@example.org.